Global IP Watch - Intellectual Property for International Professionals

CAFC Reverses Damages Based On Reasonable Royalty Rates Extrapolated From Licensing Agreements Not Tied To Claimed Invention

Xavier P. Diokno — Thu, 04 Mar 2010 21:08:21 +0000

In ResQNet.Com, Inc. v. Lansa, Inc., the Court of Appeals for the Federal Circuit (“CAFC”) affirmed the United States District Court for the Southern District of New York’s (“District Court”) ruling that Lansa had infringed ResQNet.Com’s (“ResQNet”) patents; vacated and remanded the District Court’s damages award; and reversed the District Court’s Rule 11 sanction against [...]

CAFC declines to give PTO Chevron deference interpreting statute in patent term extension dispute

Sandra Thompson — Fri, 26 Feb 2010 21:26:36 +0000

In Wyeth and Elan Pharma v. Under Sec. of Commerce for Intellectual Property, a panel of the Court of Appeals for the Federal Circuit (“CAFC”) recently affirmed the decision of the District Court for the District of Columbia to grant summary judgment that plaintiffs Wyeth and Elan Pharma (“Wyeth”) were entitled to extended patent term [...]

CAFC Vacates Obviousness Summary Judgement Of Automated Offer Solicitation System, Finding No Prior Art Allowed for Immediate Acceptance of Offers

Matt Peters — Fri, 26 Feb 2010 20:07:37 +0000

In Source Search Technologies v. LendingTree, the Court of Appeals for the Federal Circuit (“CAFC”) vacated the United States District Court of New Jersey’s grant of summary judgment that U.S. Patent No. 5,758,328 (“the ‘328 patent”), a system for matching buyers and vendors over a network like the internet, was infringed but invalid. The [...]

CAFC Rules Inherent Disclosure Must Disclose Elements As Arranged To Be Anticipatory Reference

Pat Bickley — Tue, 23 Feb 2010 21:41:43 +0000

In Therasense, Inc. v. Becton, Dickinson & Co., the Court of Appeals for the Federal Circuit (CAFC) upheld a jury verdict of invalidity even though the district court had given erroneous jury instructions where the error was harmless because the claims were obvious. Therasense and Abbott Laboratories (Abbott) claimed that Becton, Dickinson & Company [...]

Canadian FC Affirms Deemed Abandonment, Despite Payment of Fees, Due to Failure to Update Representative of Record

Kiernan A. Murphy — Thu, 04 Feb 2010 19:10:01 +0000

In Unicrop Ltd. v. Canada (Attorney General) (2010 FC 61), the Federal Court (FC) upheld the Commissioner of Patents’ decision finding Canadian Patent Application No. 2,531,185 (the ‘185 Application) abandoned. The FC confirmed that only the “authorized correspondent” could act on behalf of the applicant to pay fees and request reinstatement. The FC also held [...]

FC Accepts Evidence that Extraterritorial Website Was Accessible from Canada for Purposes of Section 45 of the Trade-marks Act

Reed Taubner — Thu, 04 Feb 2010 18:36:55 +0000

In Curb v. Smart & Biggar, the applicant — a well known American record producer — successfully petitioned the Federal Court to set aside the Registrar’s decision to strike certain wares and services from his registration of the mark CURB RECORDS. The Court found that the additional evidence the applicant had filed on appeal was [...]

British Court of Appeal refuses to enforce US judgement, finds Star Wars helmet memoralbilia does not qualify as sculpture

Harriet Zimmermann — Thu, 04 Feb 2010 17:51:15 +0000

In Lucasfilm Ltd. v. Ainsworth [2009] EW Court of Appeal Civ 1328 (16 December 2009), on an appeal from the Chancery Division, the Court of Appeal (Court of Appeal) rejected the Plaintiff-Appellant Lucasfilm’s appeal in respect of copyright non-infringement and of the lack of enforcement of a US judgement in the UK. Defendant-Respondent Ainsworth cross-appeals [...]

FC holds failure to identify adverse prior art in disclosed reference violates duty of good faith; invalidates Alzheimers treatment for anticipation, obviousness, and utility

Patrick Hui — Wed, 27 Jan 2010 19:06:54 +0000

In Lundbeck Canada v. Minister of Health, 2009 FC 1102, the Federal Court of Canada (FC) dismissed Lundbeck’s prohibition application against Ratiopharm in respect of two patents relating to memantine hydrochloride. Canadian patents 2,014,453 (‘453 patent) and 2,426,492 (‘492 patent) were listed by Lundbeck on the Patent Register under section 4 of the Patented Medicines [...]

FC Rules TM Applications Not to Be Dissected by Sound, Confirms Patients Perspective Plays a Role in Confusion Analysis of Pharmaceutical Marks

Reed Taubner — Thu, 21 Jan 2010 06:09:02 +0000

In NPS Pharmaceuticals v. Biofarma (2009 FC 172), the Federal Court upheld the Trade-marks Opposition Board’s (“the Board”) decision to dismiss NPS Pharmaceuticals’ (“NPS”) application to register the mark PREOS based on proposed use in association with pharmaceutical preparations for the treatment of certain bone diseases. Biofarma, Société par Actions Simplifiée (Biofarma), whose proposed marks [...]

CAFC holds Cancellation Petitioner Has Initial Burden to Overcome Presumption of Registered Mark’s Acquired Distinctiveness Since Under 37 C.F.R. 2.122 Application File Is Part of Evidence Record

Nihan Keser — Mon, 18 Jan 2010 01:32:19 +0000

In The Cold War Museum, Inc. v. Cold War Air Museum, Inc. the Court of Appeals for the Federal Circuit (“CAFC”) reversed the Trademark Trial and Appeal Board’s (“TTAB”) decision (#92047391), which had cancelled the registration of the Cold War Museum’s service mark THE COLD WAR MUSEUM (Serial 76487216). The TTAB had initially dealt with the [...]